Khóa luận tốt nghiệp: Protecting well-known trademarks under Vietnamese law

VIETNAM NATIONAL UNIVERSITY SCHOOL OF LAW

TRỊNH QUỐC ĐẠT STUDENT CODE: 18062013

PROTECTING WELL-KNOWN TRADEMARKS UNDER

VIETNAM NATIONAL UNIVERSITY SCHOOL OF LAW

TRỊNH QUỐC ĐẠT

STUDENT CODE: 18062013

PROTECTING WELL-KNOWN TRADEMARKS UNDER

VIETNAMESE LAW

GRADUATION THESIS

Major: Law High quality program

Course: QHL-2018-L

SUPERVISOR: DR NGUYỄN BÍCH THẢO

Hanoi, 2022

1.2 Overview of well-known trademarks 17

1.2.1.Definition of well known trademark 17

1.2.2.Characteristics of well-known trademarks 19

1.3 Significance of well-known trademark protection 20

1.4 Mechanism of protection of well-known trademarks in international law and national laws of some countries 22

1.4.1.International law 22

1.4.2.National laws 27

1.5 Sub-concluding remarks 36

CHAPTER 2 37

THE LEGAL FRAMEWORK OF WELL-KNOWN TRADEMARK PROTECTION IN

VIETNAM 37

2.1 Definition of well-known trademark under Vietnamese law 37

2.2 Criteria for identifying well-known trademarks 38

2.3 Grounds for establishing rights to well-known trademarks 44

2.4 The scope of protection of well-known trademarks 45

2.5 The term of protection for well-known trademarks 46

2.6 Rights of well-known trademark owners 47

2.7 Enforcement of rights to well-known trademarks 52

2.7.1.Determination of infringements against well-known trademarks 52

2.7.2.Sanctions to handle infringements of rights to well-known trademarks 57

2.8 Sub-concluding remarks 66

CHAPTER 3 68

THE CURRENT STATUS OF WELL-KNOWN TRADEMARK PROTECTION AND RECOMMENDATIONS TO IMPROVE THE LAW ON PROTECTION OF WELL-KNOWN TRADEMARKS IN VIETNAM 68

3.1 The current status of well-known trademark protection in Vietnam 68

3.1.1 The current status of well-known trademark infringements in Vietnam 68

3.1.2 Some disputes related to well-known trademarks in Vietnam 70

3.1.3 Achievements and shortcomings in protection of well-known trademark in Vietnam 77

3.2 Some drawbacks and recommendations to improve Vietnamese law on protection of well-known trademarks 82

3.3 Sub-concluding remarks 87

CONCLUSION 88

REFERENCES 89

UNDERTAKINGS

I hereby declare that this is my independent research work

The results of the graduation thesis have not been published in any other works The data in the thesis is honest, has clear origin, and is cited in accordance with regulations

I accept responsibility for the accuracy and truthfulness of this thesis

Thesis author Trịnh Quốc Đạt

LIST OF ABBREVIATIONS

Intellectual Property Office of Vietnam the NOIP Paris Convention for the Protection of

Industrial Property

The Paris Convention

Agreement on trade related aspects of intellectual property rights

the TRIPs Agreement

Article X Clause Y Article (X) (Y)

INTRODUCTION

1 Reasons for selecting the research topic

Nowadays, countries are paying more and more attention to the protection of intellectual property rights because intellectual property contributes to promoting creativity for the development of society Among them, trademark protection is considered one of the most important issues In a world where global marketing and commercial activities are booming, it is increasingly easy for businesses to create a global brand

Vietnam is a strong developing country, attracting a lot of foreign investors, including leading enterprises in the world We can easily see that many world well-known trademarks have appeared in Vietnam such as Apple, Mercedes, Samsung, McDonald’s, These well-known trademarks are great assets of businesses and play an important role in the business development of those enterprises Therefore, the need to protect trademarks, especially well-known trademarks, is very urgent to create a healthy and effective investment environment, ensuring the interests of trademark owners

Understanding the importance of trademark protection, legislators and policy makers in Vietnam have been very active in developing and promulgating legal documents to more effectively protect intellectual property rights However, it is possible that because this is a relatively new issue in Vietnam, the legal regulations are still inadequate, and trademark infringement still occurs on a large scale in many different forms

Given the great importance of well-known trademark protection in the development of the national economy, I have selected the topic "Protecting well-known trademarks under Vietnamese law" for my graduation thesis with the desire to study the current legal provisions of Vietnam as well as international law, from which to draw lessons and make recommendations to improve the domestic law on protection of well-known trademarks

2 Literature review

The issue of well-known trademark protection is an issue attracting great attention from researchers all over the world There have been many seminars related

to this issue such as: Conference on TRIPS Agreement, Conference on new industrial property objects in Vietnam Many textbooks and scientific works such as: "Textbook of Intellectual Property Law" (Ho Chi Minh City Law University) by Nguyen Ho Bich Hang, Nguyen Xuan Quang (co-editor); "Intellectual Property Rights" by Le Net, Vietnam National University Press, Ho Chi Minh City, 2006; Textbook of Intellectual Property Law (Hanoi Law University) by Vu Thi Hai Yen (editor); include a part addressing well-known trademarks

In addition, the issue of protection of well-known trademarks has been mentioned in many scientific journals such as: Some inadequacies in the protection and enforcement of rights to well-known trademarks of Nguyen Nhu Quynh (Vietnam Science and Technology Magazine No 11 in 2016); Completing the legal framework for protection of well-known trademarks in Vietnam - Some solutions of Dr Phan Ngoc Tam (Vietnam Science and Technology Magazine No 3 in 2019); Protection of well-known trademarks in Vietnam - Some inadequacies and experiences from abroad by Nguyen Trong Luan (Journal of the State and Law No 2/2021); Well-known trademarks and protection of well-known trademarks by 'defensive mark' tool in Japan by Vu Thi Phuong Lan (Journal of Jurisprudence No 8/2019); Besides, there are also many Master's Thesis, Doctoral Dissertation of Law has researched on the topic of well-known trademark protection such as: Master's thesis of Law "Protection of well-known trademark under the provisions of Vietnamese law" by Nguyen Thi Van; Doctoral dissertation of Law "Well-known trademark protection - A comparative study between the laws of the European Union and Vietnam" by Phan Ngoc Tam;

However, the above studies only research on certain aspects of well-known trademark protection or on well-known trademark protection in other countries without a systematic research on protecting well-known trademarks under the current law in Vietnam Nowadays, well-known trademark protection is an extremely important issue for the development of the economy Therefore, this thesis is completely topical and has practical scientific significance The thesis analyzes specifically the current legal provisions of Vietnam on the protection of well-known trademarks, combined with the study of international instruments and the laws of other countries in this field From there, it proposes to improve the mechanism of protection of well-known trademarks in Vietnam

The thesis "Protecting well-known trademarks under Vietnamese law" is an independent thesis, however, the completion of this research topic is based on the collection and acquisition of knowledge and experience from relevant scientific works which have been published

3 Object and purpose of research

- Research object: The research object of this thesis is the theoretical and practical issues of the protection of well-known trademarks in accordance with Vietnamese law, and with reference to the protection of well-known trademarks of some countries in the world and the provisions of relevant international commitments - Research purposes: On the basis of inheriting and developing previous studies, the

author clarifies and analyzes the content of current regulations on protection of well-known trademarks in Vietnam, with reference to international laws and laws of other countries, from which to evaluate, find shortcomings and make recommendations to improve Vietnamese law

4 Research methods

The thesis is conducted based on the methodology of Marxism - Leninism to analyze legal issues in connection with economic and social issues With respect to concrete research methods, the thesis uses a combination of methods such as historical method, comparative method, analytical method, synthesis method, and statistical method The thesis is mainly based on doctrinal research, analyzing the legal documents of the State, the international instruments, and judicial decisions on well-known trademarks

5 Research scope

The thesis comprehensively researches the current legal provisions on protection of well-known trademarks in Vietnam and relevant international instruments, and consults the laws of some countries in the world

6 Contributions of thesis

This thesis has achieved the following results:

- Clarify some theoretical issues about trademarks and well-known trademarks - Analyze Vietnam's current legal regulations on protection of well-known

trademarks

- Evaluate the current status of well-known trademark protection in Vietnam, its successes and shortcomings, and make recommendations to improve Vietnamese law on protection of well-known trademarks with reference to the laws of other countries and international commitments

7 Structure of thesis

In addition to the Introduction, Conclusion and List of References, the content of the thesis consists of 3 chapters:

Chapter 1: Theoretical foundations for protecting well-known trademarks

Chapter 2: The legal framework of well-known trademark protection in Vietnam Chapter 3: The current status of well-known trademark protection and

recommendations to improve the law on protection of well-known trademarks in Vietnam

According to WIPO “A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises”2

The Trips Agreement regulated that “Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks.”3 It can be seen that the definition of trademark in the Trips Agreement is quite broad, a trademark can be "any sign" or "any combination of signs", as long as it is capable of distinguishing the goods of different ones Thus, a trademark is not necessarily composed of one sign, but can be composed of many different signs Besides, in more detail than the definition of WIPO abovementioned, this definition indicates some signs that can become trademarks such as personal names, letters, numerals, figurative elements and combinations of colours

1 Phan Ngoc Tam, Doctoral Dissertation of Law , Well-known trademark protection A comparative study

between the laws of the European Union and Vietnam, page.27

2 Available at

https://www.wipo.int/trademarks/en/#:~:text=What%20is%20a%20trademark%3F,protected%20by%20intellectual%20property%20rights

3 Article 15, Agreement on trade related aspects of intellectual property rights (TRIPs)

Meanwhile, according to European Union trademark law: "A trademark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings" In general, this definition still shows that the function of a mark is to distinguish goods and services of different subjects, but there is an expansion in the list of signs that can become a trademark compared to the definition of trademark under the Trips Agreement such as the shape of goods or of their packaging

Under the Vietnamese legal system “trademark is any sign used to distinguish goods or services of different organizations or individuals”4 Moreover, Article 72 (1) of the 2005 Law on Intellectual Property (as amended 2009,2019) stipulates that a trademark is protected if it is “a visible sign in the form of letters, words, drawings or images including holograms, or a combination thereof, represented in one or more colours” and “is capable of distinguishing goods or services of the mark owner from those of other subjects” Basically, this definition has many similarities with the definitions of intellectual property organizations and international conventions except that under Vietnamese law only visible signs can become a trademark Thus, Vietnam does not protect non-traditional trademarks such as scents and sounds because the protection of these marks requires a country to have a high level of development, and to have sufficient basic facilities as well as the qualifications of experts

From the above definitions, it is apparent to see that now there are many definitions of trademarks that have been given, but these definitions have no fundamental difference In general, most authorities agree that a trademark should be defined as a specific sign used to separate goods or services from each other5

From the above analysis, in my opinion “A trademark is any sign or combination

of signs, including but not limited to letters, words, drawings, images, designs, devices for the purpose of identifying and distinguishing goods or services of different individuals and organizations”

1.1.2 Function of trademarks

4 Article 4 (16), the 2005 Intellectual Property Law

5 Phan Ngoc Tam, Doctoral Dissertation of Law, Well-known trademark protection A comparative study between

the laws of the European Union and Vietnam, page.29

Considering the above definitions of trademark, it is clear that these definitions mainly refer to the function of distinguishing goods and services of different subjects of the trademark However, beyond that basic function, a trademark has a number of other functions that benefit the manufacturer or the consumer

Firstly, the most important function of a trademark is to distinguish products or services of different individuals or organizations Nowadays, with the development of the economy, many similar products are manufactured by different companies, and the quality of these items is also different Thanks to signs such as words, images or combinations of such signs, consumers can distinguish goods and services of the same type and choose to buy goods from their favorite manufacturers In addition, now many businesses intentionally produce goods with similar appearance, counterfeit goods to deceive consumers, so the importance of trademarks is increased because it helps consumers distinguish between goods of similar appearance

Secondly, trademarks enable consumers to identify the physical origin of the goods and service Trademarks have the ability to provide customers with information about the manufacturer or service provider bearing these trademarks, from which the customer can decide whether to purchase the product of one producer or others For example, a dishwashing liquid product bearing the trademark of a long-standing, reputable manufacturer, this type of dishwashing liquid has also been highly regarded by a number of consumers, then it is likely that this is a high quality product From that information, consumers can easily make the right choice

Thirdly, trademarks guarantee the quality of goods and services In fact, the majority of consumers, when buying a certain product for the first time, tend to choose the type of goods bearing a trademark that has confirmed its prestige in the market because they think it is a guarantee for the quality of that product In addition, a successful trademark in the market will promote the owner of that trademark to invest more in their products and services to maintain their reputation, meet customer needs, thereby producing better products and services For instance, when it comes to the trademark "KFC", consumers not only know that this is a well-known trademark of fried chicken from the US, but they also know this trademark because of the delicious taste of fried chicken that their restaurants offer

Lastly, trademarks have economic functions A trademark that has built a reputation in the market can become a tool to advertise a company's products to

customers, thereby increasing business efficiency In addition, a prestigious trademark often has a great transfer value, so the transfer of rights to the trademark can also bring great profits to individuals and businesses that own that trademark

In addition, in doctoral dissertation of law “Well-known trademark protection: A comparative between the laws of the European Union and Vietnam”, Dr Phan Ngoc Tam pointed out some other function of trademark such as serving as a badge of support or affiliation, and enabling the consumer to make a lifestyle statement

- Multiform

Trademarks exist in many different forms It can be characters, letters, proper names, images, symbols, colors or combinations of colors; even non-traditional trademarks such as scents and sounds Accordingly, it is difficult to limit the scope of the physical forms of trademarks to specific signs Trademarks may be anything which is distinctive and made and used by the producers, and in accordance with the laws6

- Valuable

In today's marketplace, a trademark is not only a sign that distinguishes goods and services, but it is also considered an asset of the enterprise (intangible property), even a trademark is an asset whose value is much higher than that of other physical assets

6 Phan Ngoc Tam, Doctoral Dissertation of Law, Well-known trademark protection A comparative study between

the laws of the European Union and Vietnam, page 37

The commercial value of a trademark can be derived from the aesthetics, prestige of the trademark or the purchasing power of the goods or services bearing the mark, licensing agreements or franchises between trademark owners and other parties

- Territorial limitation

Basically, a trademark registered in a country is only protected under the laws of that country or territory Each country provides its own criterias for a sign to be protected as a trademark, and the protection of a trademark in a certain country does not automatically exist in other countries, except under specific provisions related to international protection of intellectual property rights in general and trademarks in particular in a number of international conventions

1.1.4 Classification of trademarks

Depending on different criteria, there are many different ways to classify trademark

- Classification based on trademarked products

According to this criteria, trademarks can be classified into two groups: trademarks and service marks

A trademark is a mark attached to products and product packaging to distinguish products of the same type from different manufacturers For example, Unilever IP Holdings B.V has been granted a trademark license by the Intellectual property office of Vietnam (NOIP) No 4202040935 for the trademark "Sunlight" for dishwashing liquid

A service mark is a mark used to distinguish the services of different service providers For instance, Business Household Lá Homestay has been granted a trademark license by the NOIP No 4202146015 for the trademark “La Homestay” for tourism services; domestic travel and international travel; freight transport services and tourist passenger transport services; transportations rental service

- Classification based on types of protected sign

A word mark is a mark that is made up of characters, letters, or numbers, which are pronounceable, and may or may not have any meaning For example, the trademark “MAZDA” for Mazda Motors Corporation

A device mark made up of images, drawings, graphic design, may or may not have words For example: trademark “COCA-COLA is a combination of the word COCA-COLA and a soda bottle

- Classification based on function of trademarks

A collective trademark is a type of trademark used by members of a collective, association, or other organization to indicate membership and/or to distinguish the goods and services of members from those of non-members7 A collective trademark is a mark of a collective of manufacturers (can be an association, corporation, ) This collective sets out general regulations for the use of the mark such as criteria for quality, production methods of goods; criteria for becoming a member of the collective which is the owner of the collective trademark, etc The collective trademark is only used by its members, the collective itself does not use this mark If a collective offers its own goods and services under the mark, it is not considered a collective trademark; it is a trademark for the goods and services offered by the organized collective The owner of a collective mark has an obligation to control the use of the collective trademark by its members

An integrated trademark means identical or similar trademarks registered by the same entity and intended for use on products or services which are of the same type or similar types or interrelated8 An integrated trademark has the following main characteristics: registered by the same subject; the integrated trademarks may be identical or similar; the integrated trademarks used for identical, similar or related products or services For example: Some trademarks of Coca-Cola in Vietnam such as Coca-ColaLight, Coke Zero, Sprite, Fanta, …

A certification trademark is a mark that the owner allows other individuals and organizations to use to indicate that their products and services meet certain standards Those standards might be quality, accuracy, safety, how goods are manufactured, how services are provided, … Certification trademarks have two main characteristics: Firstly, certification trademarks ensure that the goods and services of the certified enterprise meet certain standards; Secondly, the owner of the certification trademark does not directly use this mark, but allows other subjects to use it on their goods and services if they meet the standards set by the certification trademark owner For

7 Available at https://www.law.cornell.edu/wex/collective_mark

8 Article 4 (19), the 2005 Intellectual Property Law

instance: the trademark “VINACERT CERTIFICATION VNC” is the certification trademark of VinaCert certification and inspection joint stock company

- Classification based on the reputation of trademarks

Based on this classification, trademarks can be divided into two types: known trademarks and ordinary trademarks Theoretical issues about well-known trademarks will be analyzed in detail in the next section Ordinary trademarks are marks that do not meet the criteria to become well-known trademarks and have only the basic function of distinguishing goods and services of the same type of different subjects

well-1.2 Overview of well-known trademarks

1.2.1 Definition of well known trademark

Nowadays, there are so many famous trademarks that just mentioning them, consumers immediately imagine the type of product or service bearing the trademark Some such trademarks can be mentioned are Coca Cola, Toyota, KFC, The creation of such trademarks is a great success of the manufacturer or service provider, however the more famous a trademark is, the more likely it is to be infringed, so it is necessary to have an appropriate protection method for well-known trademarks Firstly, we need to know “what is a famous trademark?” Although the term well-known trademark has existed for a long time, defining a definition for "well-known trademark" is not easy when international conventions and national laws are not consistent

The Paris Convention does not provide a specific definition of a well-known

trademark, but only defines the obligations of member States as follows: “… to refuse

or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods”9 In addition, the Paris Convention also provides for a period within which the owner of a well-known trademark can request the cancellation of the trademark infringing upon his or her well-known trademark rights Thus, the Paris Convention only provides the minimum provisions for the protection of well-known trademarks, while the determination of

9 Article 6bis, Paris Convention for the Protection of Industrial Property

what is a well-known trademark, the convention is left open to the member states to determine to suit the conditions and circumstances of each country

Similar to the Paris Convention, the Trips Agreement does not specify the definition of a well-known trademark This Agreement has an expansion compared to the Paris Convention when the provision of protection for well-known marks is extended to include service trademarks, not just trademarks The Agreement also recognizes general grounds for determining well-known trademarks, according to

which "In determining whether a trademark is well-known, Members shall take

account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark”10

In addition to some provisions on protection of well-known marks in international conventions, well-known trademarks are also regulated in national laws Each country has different economic and social conditions, so the issue of protection of well-known trademarks is also different “The laws of many countries have not provided a specific definition of ‘well-known trademark’ Therefore, in fact, this issue is mainly resolved by the Courts or competent agencies in each specific case”11 However, there are also some countries that provide specific definitions of well-known trademarks Currently, China's trademark law stipulates that: "Well-known trademark is a mark widely known by the relevant section of the public in China" Vietnam's 2005 Intellectual Property Law (as amended 2009, 2019) also stipulates: “Well-known trademark means a mark widely known by consumers throughout the territory of Vietnam”

Through studying and comparing views on well-known trademarks in international law and the national laws, Dr Phan Ngoc Tam pointed out: “A well-known trademark should be understood as a trademark which is popularly known by many people within the relevant territory or is considered and recognized by the authorities of the countries regardless of where it is used or registered or not”

From the above definitions and perspectives, I draw the following definition: "A

well-known mark is a mark that is widely known by the majority of people in the

10 Article 16 (2), Agreement on trade related aspects of intellectual property rights (TRIPs)

11 Phan Ngoc Tam, Le Quang Vinh, Project Research Report: Protection of Well-known trademark under

Vietnamese law – Situation and Solutions, page.29

relevant public sector or recognized by the authorities of the countries regardless of where it is used or registered or not”

1.2.2 Characteristics of well-known trademarks

A well-known trademark also has the main characteristics of an ordinary trademark as mentioned above such as distinctiveness, multiform, and value However, because a well-known trademark is a special type of trademark, it also has its specific characteristics:

- Widely known by the relevant consumer segment

The well-known trademark must be widely known by the relevant consumer segment So how to evaluate "widely" Each country will have a different way of determining this factor “For example, in Germany, if the results of a survey indicate that 80% or more of the people surveyed are familiar with a trademark, that trademark can be evaluated as a famous trademark, and if nearly 40% or more of the people surveyed are familiar with a trademark, that trademark is evaluated as a well-known trademark In France, other conditions are taken into consideration such that if results indicate that 20% or more of the persons surveyed are familiar with a trademark, that trademark is evaluated as a well-known trademark”12 Moreover, the evaluation of well-known marks should also consider only relevant consumers (may be those who directly use the product or service or who are likely to know about the product or service) because the range of consumers is very large and a person cannot know the trademark with which he or she has no connection The popularity of a well-known trademark is also reflected in the fact that the mark is deeply imprinted in the minds of consumers associated with a particular type of goods or service For example, when it comes to NIKE, consumers immediately think of sports products; When it comes to Mercedes, consumers will immediately think of luxury cars

- High commercial value

Businesses that own well-known trademarks often bring in a huge amount of revenue and profit based on selling goods or providing services bearing the mark For example, in 2021 Apple's iPhone sales is $196 billion, equivalent to 44% of total global smartphone sales in 2021 With a well-known trademark, a business can easily take

12 Phan Ngoc Tam, Doctoral Dissertation of Law, Well-known trademark protection A comparative study

between the laws of the European Union and Vietnam, page 63

advantage of other businesses, it is easy to attract the attention and trust of consumers, so their revenue also increases significantly Moreover, the transfer value of these trademarks is also extremely large, even businesses can contribute capital with their well-known trademarks

- The protected territory of a well-known trademark is wider than that of an

ordinary trademark

As analyzed in the characteristics of trademarks, an ordinary trademark is only protected within the country or territory in which it is registered, not automatically protected in other countries However, for well-known trademarks, the mark can be protected in the country where the mark has not been registered or used, provided that the trademark is recognized as a well-known trademark by the competent authority in the country13

- Long and uninterrupted time of use

A trademark that has just been born does not immediately become famous Most well-known trademarks need a long time to affirm their prestige in the market and gain the recognition and trust of consumers For example, the Japanese trademark “HONDA” has existed since 1946

- Easily infringed

As mentioned, well-known trademarks bring competitive advantages and huge revenue to trademark owners, which brings many benefits to businesses, but also attracts other individuals and organizations to infringe the trademark to collect illicit profits Other entities normally infringe well-known trademarks by creating identical or similar trademarks to well-known trademarks, in order to deceive consumers, thereby increasing profits rapidly This situation is very common in all countries and it is extremely difficult to protect well-known trademarks from such infringements If infringement continues for a long time, the reputation, popularity and revenue of the well-known trademark owner can be seriously threatened Therefore, it is necessary to strengthen the law to increase the ability to protect trademarks

1.3 Significance of well-known trademark protection

- Significance for businesses

13 Ngô Thuỳ Dương, Master thesis, Well-known trademark protection in accordance with Vietnamese law and

some Asian countries law, page 23

Firstly, protection of well-known trademarks is to protect the assets of

enterprises A well-known trademark can be considered a priceless asset of an enterprise because it increases the business efficiency of the enterprise through the sale and provision of goods and services bearing the mark In addition, well-known trademarks are also highly valued For example, in 2021, the Apple brand is valued at $408.6 billion by Interbrand – Global Brand Consultancy To be more specific, brand is an economic definition indicating signs having commercial value; trademark and brand are two different definitions but have many similarities Brands can be trade names, trademarks, logos, symbols,

Secondly, protection of well-known trademarks helps businesses retain familiar

customers and attract more potential customers In fact, customers often trust reputable and well-known trademarks in the market Therefore, trademarks that are well protected and not diluted will be extremely attractive to customers and bring great benefits to businesses

Thirdly, protection of a well-known trademark is the protection of a way to

promote an enterprise's image Well-known trademarks that have been imprinted in the minds of the consuming public associated with a particular type of goods will help the manufacturers to reduce advertising and marketing costs significantly

Lastly, the trademark protection mechanism is also a premise for businesses to

confidently improve their products and services to increase the “well-known” of trademarks without having to worry about their trademark being infringed

- Significance for customers

In addition to the great advantage for businesses, protection of well-known trademarks also brings many benefits to consumers

On the market, there are many individuals and organizations that manufacture counterfeit goods, goods similar to those with well-known trademarks, or deceive consumers by using similar or identical trademarks to well-known trademarks attached to their products for illicit profit or unfair competition Therefore, consumers always have difficulty in choosing high-quality products As is known, trademarks have the function to help consumers distinguish goods and services of the same type of different subjects and well-known trademarks are no exception, even well-known trademarks must do this better than ordinary trademarks Therefore, the protection of well-known

trademarks has an important meaning in protecting the interests of consumers, avoiding confusion and damage when purchasing poor quality goods, and at the same time helping consumers reduce the time to research the product quality that they want because the products bearing well-known trademarks have affirmed a certain reputation in the market

- Significance for the overall economy

Protection of well-known trademarks creates the foundation for the birth of many well-known trademarks, helping to promote the national economy, thereby also demonstrating the development and sustainability of a country

Protection of well-known trademarks creates an effective business environment, prevents acts of unfair competition, prevents goods infringing upon intellectual property rights from entering the domestic market and creates favorable conditions for goods bearing well-known trademarks of countries to enter the market mutually

1.4 Mechanism of protection of well-known trademarks in international law and national laws of some countries

1.4.1 International law

In the past, the issue of intellectual property rights protection, including trademark protection, was often only considered from a national perspective, but economic integration is a mandatory requirement of each country today Therefore, this issue must be considered in a broader perspective through Governments joining and signing international conventions in this area

• Paris Convention of 1883 for the Protection of Industrial property

The Paris Convention for the protection of industrial property was the result of the first international effort to standardize and simplify the protection of intellectual property rights in Member States14 This Convention was adopted on March 20, 1883 and revised several times in the 20th century This Convention was created with the main purpose of establishing an Union of countries to protect industrial property and ensure the advantages to protect industrial property for nationals of member states in the territory of other contracting countries, or even protect the rights of nationals who

14 Phan Ngoc Tam, Doctoral Dissertation of Law, Well-known trademark protection A comparative study

between the laws of the European Union and Vietnam, page 71

are not part of the Member State, but owning effective place of business in the Member State15

The Paris Convention addresses basic issues such as the scope of industrial property protection, the principles of protection, priority of applications, and the enforcement and implementation of the Convention in member states16 This Convention is the first international instrument mentioning the protection of well-known marks in article 6bis Article 6bis (1) of Paris Convention (as amended in 1967)

regulates that: “The countries of the Union undertake, ex officio if their legislation so

permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well–known mark or an imitation liable to create confusion therewith” It is apparent that the Paris Convention stipulates

the obligation of Member States “to refuse or to cancel the registration, and to prohibit the use” of trademarks which infringe well-known trademarks Specifically, the infringements upon well-known trademarks listed in this article include acts of reproducing, imitating (whole or the essential part of the mark) or translating a well-known mark and attaching them on identical or similar goods which can create confusion In addition, Article 6bis leaves the determination of a well-known mark open to the competent authority of the country of registration or the country in which the mark is used Article 6 further stipulates that the time limit for the owner of a well-known mark to be required to cancel the trademark that infringes his rights is not less than 5 years, especially for trademarks that are registered or used in bad faith (for example, taking advantage of the trademark's popularity to deceive customers to gain illicit profits), there is no time limit for requesting cancellation17 However, in this case, the owner of the well-known mark must prove that the registration or use of the trademark was made in bad faith

15 See Articles 1, 2, 3 of the Paris Convention

16 Phan Ngoc Tam, Doctoral Dissertation of Law, Well-known trademark protection A comparative study

between the laws of the European Union and Vietnam, page 71

17 See clause 2 and clause 3, Article 6bis, the Paris Convention

In addition to the provisions directly aimed at protecting well-known trademarks as in Article 6bis, Article 10bis also indirectly protects well-known trademarks from infringing acts through regulations on prohibiting acts of unfair competition

Specifically, Article 10bis (3) identifies acts of unfair competition including: (i) all acts

of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a competitor; (ii) false allegations in the course of trade of such a nature as to discredit the establishment, the goods, or the industrial or commercial activities, of a competitor; (iii) indications or allegations the use of which in the course of trade is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods

Besides the achievements in the protection of well-known trademarks, the Paris Convention also has some shortcomings as follows:

Firstly, it can be seen that the Paris Convention is mainly aimed at stipulating the most basic principles of well-known trademark protection, so it does not provide a specific definition of a well-known mark or criteria for defining a well-known mark but leave the determination of these matters to national law However, this is also a shortcoming of this convention because the lack of common criteria to identify well-known marks makes it difficult to apply the convention because member states have very different regulations

Secondly, The Paris Convention only mentions the protection of trademarks but does not mention the protection of service marks This is quite understandable because at the time of adopting the convention, the field of commercial service had not yet developed as strongly as it is now

Thirdly, the scope of protection of well-known marks of the Paris Convention is relatively narrow when it only applies to similar or identical goods, but not to goods that are not similar or identical

In conclusion, the Paris Convention has laid the basic foundation for the protection of well-known trademarks, contributed greatly to standardizing trademark law in the world and prevented discrimination among citizens of the Contracting States for the protection of industrial property rights

• TRIPs Agreement 1994

The Agreement on Trade-Related aspects of Intellectual Property Rights (TRIPs Agreement), enacted in 1994, was a great success of the Uruguay Round negotiations in improving the international trading system as well as making a significant contribution to the international legal system for the protection of intellectual property rights

One of the fundamental features of the TRIPs Agreement is that it has made the protection of intellectual property rights an integral part of the multilateral trading system represented by the World Trade Organization (WTO) and it is often described as one of the three pillars of the WTO in addition to provisions dealing with trade in goods (GATT 1947, 1994) and trade in services (GATS)18

The main content of this agreement is the provisions related to the protection of objects of industrial property including trademarks The provisions on the protection of trademarks in general and well-known trademarks in particular are located in section 2 part 2 of the TRIPS Agreement, specifically articles 15 and 16 Specifically, Article 15 (1) provides for the definition of a trademark, according to which “Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark” Article 15 (2) provides for grounds for refusal in relation to the registration procedure Article 15 (3) deals with the possibility of registration based on use Article 15 (4) stipulates that the nature of goods or services does not affect the registration of trademarks of such products Article 15 (5) deals with procedural matters including: publication of a trademark, filing of a petition for cancellation of a trademark registration and objections to trademark registration

Article 16 of the TRIPS Agreement provides for the protection of well-known trademarks, this is basically based on the article 6bis of the Paris Convention, however it has been significantly improved by supplementing the shortcomings in the Paris Convention Article 16 (1) has recognized that the protection of trademarks (including well-known marks) must include both trademarks and service marks through a provision that allows the trademark owner to prevent other subjects from using identical or similar signs for goods or services that are identical or similar to their own This shows the influence of service marks in international trade today Article 16 (2)

18 Phan Ngoc Tam, Le Quang Vinh, Project Research Report: Protection of Well-known trademark under

Vietnamese law – Situation and Solutions, page 41

continues to affirm that the application of Article 6bis of the Paris Convention to known trademarks must be applied to service marks In addition, the TRIPS Agreement

well-has recognized that the basic criterion for determining a well-known mark is “the

knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark” However, the agreement has not yet provided a specific explanation for

the phrase "relevant sector of the public" The TRIPS Agreement also provides for the refusal, cancellation of registration or prohibition from using a mark identical or similar to a well-known mark attached to goods which are not similar and not identical to those bearing the well-known mark if it is likely to affect the interests of well-known trademark owners and customers19 For example, a Pepsi trademark in connection with motorcycles may be rejected because it confuses the customer about the relationship between the manufacturer of the motorcycle and the owner of the Pepsi trademark

In addition, as regards enforcement of trademark rights, Articles 41 to 61 of the TRIPs Agreement regarding enforcement of intellectual property rights include protection for well-known trademarks under Article 16 (3) of the TRIPs Agreement20

In short, although the TRIPs Agreement only outlines the basic principles for the protection of well-known marks, it has made a great contribution in initially forming a common standard for the identification of well-known marks and initially widening the scope of protection of well-known trademarks on a global scale

• WIPO’s Recommendation

The World Intellectual Property Organization (WIPO) was established by the WIPO Convention in 1967 This is a specialized organization of the United Nations, created to promote and protect intellectual property rights As mentioned above, the Paris Convention and the TRIPs Agreement only stipulate the basic principles of protection for well-known trademarks without providing detailed provisions on this content Therefore, the application of these international legal documents becomes difficult due to the large differences between domestic laws To address this issue, in September 1999, the General Assembly of the Paris Union and of the World

Intellectual Property Organization (WIPO) has issued a ‘Joint Recommendation

19 See Article 6 (3), TRIPs Agreement

20 Phan Ngoc Tam, Doctoral Dissertation of Law, Well-known trademark protection A comparative study

between the laws of the European Union and Vietnam, page 77

Concerning Provisions on the Protection of Well-Known Marks’ to clarify and

supplement the provisions on protection of well-known trademarks in the Paris Convention and the TRIPs agreement Some important points regarding well-known trademark protection that this Joint Recommendation makes clear include:

Firstly, the Joint Recommendation lists a series of grounds for identifying known trademarks including: (i) the degree of knowledge or recognition of the mark in the relevant sector of the public; (ii) the duration, extent and geographical area of any use of the mark; (iii) the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies; (iv) the duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent that they reflect use or recognition of the mark; (v) the record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognized as well known by competent authorities; (vi) the value associated with the mark It should be noted that the criteria for determining a well-known mark are not limited to this list, and a well-known mark does not necessarily satisfy all of these six criteria, but may satisfy one or some or even none of the criteria are met (criteria outside the list above must be considered) depending on the particular case

well-Secondly, the WIPO’s Recommendation clarifies the concept of "relevant sector of the public" (an important element in identifying well-known marks in the TRIPS agreement) Accordingly, the relevant sector of the public may include, but is not limited to: (i) actual and/or potential consumers of the type of goods and/or services to which the mark applies; (ii) persons involved in channels of distribution of the type of goods and/or services to which the mark applies; (iii) business circles dealing with the type of goods and/or services to which the mark applies

Thirdly, the Recommendation also give a list of criteria that should not be considered as criteria for determining well-known marks: (i) that the mark has been used in, or that the mark has been registered or that an application for registration of the mark has been filed in or in respect of, the Member State; (ii) that the mark is well known in, or that the mark has been registered or that an application for registration of the mark has been filed in or in respect of, any jurisdiction other than the Member State; or (iii) that the mark is well known by the public at large in the Member State

1.4.2 National laws

• Chinese law

- Definition of well-known trademark

The definition of a well-known mark has been established in Chinese law quite early and has undergone many revisions The change in the definition of "well-known trademark" over time shows how legislators understand this definition and protect it

China's 2001 Trademark Law provides criteria for evaluating well-known trademarks but does not provide a specific definition In 2003, the State of Administration for Industry and Commerce (hereinafter ‘SAIC’) enacts the ‘Provisions on the Determination and Protection of Well-known Trademarks’ (hereinafter ‘2003 Provision’) Accordingly, a well-known trademark is ‘a mark that is widely known to the relevant sectors of the public and enjoys a relatively high reputation in China’ Thus, according to this regulation, in order to become a well-known trademark in China, it must be:

Firstly, widely known by the relevant public 2003 Provision regulated that ‘Relevant sectors of the public shall include consumers of the type of goods and /or services to which the mark applies, operators who manufacture the said goods or provide the said services, and sellers and other persons involved in the channels of distribution of the type of goods and/or services to which the mark applies’ This article clearly lists the possible objects of ‘relevant sectors of the public’, making it easier to identify well-known marks

Secondly, well-known trademark must ẹnjoy a relatively high reputation Regarding this issue, Chinese law does not have a specific guideline to define what is 'relatively high reputation' This provision has misled people to believe that a well-known trademark is an honourable title and made it difficult for trademark owners to prove that their mark is a well-known trademark Regulations on relevant public sector are similar to those in the 2003 Provision The 2013 trademark law of China does not provide a specific definition of a well-known mark

Realizing the shortcomings in the 2003 Provision, SAIC enacted Provisions on the Determination and Protection of Well-Known Trademarks on March 7, 2014 (hereinafter ‘2014 Provision’) This document stipulates that “Well-known trademarks

means the trademarks widely known by the relevant public in China”21 It can be seen that the 'highly relative reputation' condition in the 2003 Provision has been omitted This is an improvement of China's trademark law as now trademark owners only have to prove their trademark is widely known by the relevant sector of the public, enabling the trademark owner to well-known trademarks prove and enforce their rights to well-known marks

- Criteria to identify well-known trademarks

The 2013 Trademark law provides the following criteria to identify well-known trademarks:

(l) How well is that trademark known by the relevant public

A well-known trademark cannot be estimated roughly, but one of its important factors is its popularity among the relevant public The relevant sector of the public must be that group of people who have a certain connection to the mark (as provided in the 2014 Provision) because a product may only be familiar to a certain segment of consumers and not to all consumers This provision of Chinese law is consistent with the spirit of the TRIPs agreement (China is a member state) However, the 2013 Trademark Law does not provide the standards for judging ‘how well’ a trademark is known by the relevant public Evidence of a trademark's awareness can be obtained through consumer surveys However, this type of evidence is not favored by the courts because there are no specific criteria to assess the reliability of the organizations conducting the survey and the assessment methods and survey results

(2) Time for continued use of the mark

Article 48 under the 2013 Trademark law stipulates that “The use of trademarks prescribed in this law refers to the use of trademarks on goods, packages or containers thereof and commodity trading instruments, or use of the trademarks in advertisements, exhibitions and other commercial activities to identify the source of the goods” Therefore, evidence of continued use includes: evidence that goods were sold in a store or exhibition, receipts, news reports of sales, or other commercial activities22 In some cases, non-commercial activities such as charity auctions or auction previews are also

21 Article 2 of the 2014 Provisions on the Determination and Protection of Well-Known Trademarks (Chinese Law)

22 Ngô Thuỳ Dương, Master thesis, Well-known trademark protection in accordance with Vietnamese law and

some Asian countries law, page 39

considered trademark use because the public may also become aware of the mark through this activity23 The time to start using a trademark is any time there is activity related to the mark, which can be the time when the trademark owner uses the mark, the owner's partner uses the mark, or the previous owner used the trademark The 2013 Trademark Law does not specify the period of continuous use of a mark, which makes it difficult to prove that a trademark is a well-known trademark The 2014 Provision has overcome this problem by stipulating: if a trademark has not been registered, proof that the time of use of the mark is not less than 5 years will be submitted; in the case of a registered trademark, documents proving that the mark has been registered for not less than three years will be required, or the same proof as in the case of non-registration24

(3) The period, extent and geographic scope of any publicity of the mark

Article 9 (3) under the 2014 Provision regulates that “Materials proving the duration, extent and geographic scope of any publicity work of the trademark, such as the materials on the manners of advertising and sales promotion activities, geographic scope, types of publicity media and the quantity of advertisements in the recent three years” Thus, the more diverse the advertising methods, the larger the advertising range, the more ads, the greater the trademark's recognition The public audience of the advertisement is also a factor to consider For example, the Bloomberg trademark has been denied protection as a well-known trademark even though it has been broadcast in China since 2003 because it is not broadcast in Chinese and therefore does not prove that it has been widely known by the Chinese relevant public25

(4) The record of protection of that trademark as a well-known trademark

Well-known trademark records are decisions to recognize a mark as a known trademark by Trademark Office (TMO), Trademark Review and Adjudication Body (TRAB) or People's courts The well-known trademark recognition documents of the competent authorities of other countries are also considered

well-(5) Other factors for which that trademark is well-known

23 Ngô Thuỳ Dương, Master thesis, Well-known trademark protection in accordance with Vietnamese law and

some Asian countries law, page 39

24 See Article 9 (2) of the 2014 Provisions on the Determination and Protection of Well-Known Trademarks

25 Ngô Thuỳ Dương, Master thesis, Well-known trademark protection in accordance with Vietnamese law and

some Asian countries law, page 40

Other factors to prove the popularity of the mark can be the documents proving the prestige and position of the mark in the market Such as documents proving revenue, profit, market share or also prestigious awards given to trademark owners

- The recognition and protection of well-known trademark

The recognition of well-known trademarks in China is carried out according to certain principles:

Firstly, Passive recognition principle Previously, Chinese law used the principle

of "initiative recognition", this means that the CTMO could award 'well-known trademark' without responding to any request from the applicant However, this method has been criticized by many critics because this approach led to the disconnection between the legal rationale for the recognition and protection of well-known trademarks, and the public understanding of the significance of well-known trademark status26 The principle of passive recognition means that the administrative and judicial authorities can only consider and recognize a well-known mark when the trademark owner requests the recognition and protection of their mark as a well-known trademark in case they believe their rights are being infringed

Secondly, Case by case recognition This principle means that the recognition of

a mark as a well-known mark is valid only in the case under consideration and not in relation to other individual cases later “It means that being identified as well-known trademark by the empowered authorities is not a kind of administrative approval or award/honour initiated by the said authorities Instead, it reflects that such authorities are only determining facts necessary to deal with a trademark case upon request of the party concerned in accordance with relevant laws and regulations, and such facts are the premises for the trademark to be protected in accordance with Article 13 of the Trademark Law”27.However, the identification as a “well-known” trademark by the empowered authorities may be used as a reference of protection record for the subsequent similar cases28 In the past, Chinese law provided that a trademark recognized as a well-known trademark in one case would be valid for three years, but this provision has now been removed and replaced by ‘case by case’ principle

26 Xiao Mu, Doctor of Philosophy, The Evolution of Well-Known Trademark Protection in China, page.75

27 Xiao Mu, Doctor of Philosophy, The Evolution of Well-Known Trademark Protection in China, page.78

28 Xiao Mu, Doctor of Philosophy, The Evolution of Well-Known Trademark Protection in China, page.78

Thirdly, Honesty and Good faith principle This principle is a basic principle in

the recognition and protection of well-known trademarks in China This principle protects the rights of well-known trademark owners and prevents malicious registration of trademark China applies a 'first to file' trademark registration system, which means that whoever files a trademark application first gets the right to register the mark (regardless of whether that person uses the mark after someone else) This system makes it easy for competent authorities to manage the trademark system, but it is an opportunity for trademark infringements, especially well-known trademarks The Trademark Law 2013 has recognized the ‘Honesty and Good faith’ principle to minimize the malicious registrations Article 7(1) regulates that “Any one who applies or uses a trademark shall observe the principle of honesty and credibility” The Trademark Law 2013 sets out criteria for competent authorities to prevent trademark registration with malicious intent Accordingly, Article 15 (2) stipulates “Where an identical or similar trademark is applied for registration on the goods that are identical with or similar to those of a prior used trademark by others, when the applicant is aware of the trademark of others due to contractual, business or other relationship in addition to those prescribed in the preceding paragraph, the trademark shall not be approved for registration when others file opposition against it” This principle and its concretization into specific terms in the Trademark Law 2013 are very important in preventing the act of registering trademarks with bad faith in China

• Japanese Law

- Definition of well-known trademark

Under the Japanese legal system, well-known trademarks can be protected under both the Trademark Law and the Unfair Competition Law However, Japanese law does not provide any specific definition for a well-known trademark The term "well-known trademark" is mentioned in the Japanese Trademark Law in article 4(1)(x) as follows: it is forbidden to register any mark, regardless of the above definition, which is identical or similar to a trademark well-known among consumers of another person when indicating goods/services related to that person's business activities, if this mark is used for such goods/services or similar goods/services In addition, Article 4 (1) (xix) also mentions well-known trademarks: "It is forbidden to register a trademark being identical with, or similar to, a trademark which is well known among consumers in Japan or abroad as that indicating goods or services pertaining to a business of

another person, if such trademark is used for unfair purposes (referring to the purpose of gaining unfair profits, the purpose of causing damage to the other person, or any other unfair purposes, the same shall apply hereinafter) (except those provided for in each of the preceding items)" Besides, according to Article 2 of the Trademark Law, a trademark must always be associated with commercial purposes Therefore, a well-known trademark must also be associated with commercial purposes

The term "well-known trademark" is further clarified in a number of regulations in the JPO Guidelines issued by the Japanese Patent Office (JPO) Accordingly, in Part 3 Chapter 9 guiding Article 4 (1) (x) of the Trademark Law, it is stated that: "A trademark which is well known among consumers includes not only a trademark which is well known among end consumers but also a trademark which is well known among traders in the industry and also includes not only a trademark which is known throughout the country but also a trademark which is well known in a certain area.” Part 3 chapter 17 guides article 4 (1) (xix) instructions on ‘a trademark well-known among consumers abroad’ as follows: "The trademark must be well known in one country other than Japan but is not necessarily required to be well known in several countries In addition, when the trademark is well known abroad, the fact as to whether or not the trademark is well known in Japan is disregarded."

Thus, it can be seen that a well-known trademark in Japan may have the following characteristics: (i) The trademark is widely known by the relevant consumer or trader; (ii) Trademarks are used for commercial purposes; (iii) Trademarks used in Japan or abroad29

- Criteria to identify well-known trademarks

JPO Guidelines in article 3 (2) Part 2 also provides a number of criteria for assessing whether a trademark has achieved distinctiveness through use: (i) A mark is actually used in practice and the goods or services for which the mark has been used; (ii) the date of commencement of use of the mark, the length of the period of use or the area in which the trademark is used; (iii) Production volume of goods bearing the mark, certificate or delivery document and size of business; (iv) Method, frequency and

29 Ngô Thuỳ Dương, Master thesis, Well-known trademark protection in accordance with Vietnamese law and

some Asian countries law, page 46

content of advertising; (v) Number of appearances in newspapers, trade magazines, Internet and magazine content; (vi) Results of the questionnaire30

For the convenience of the owner in proving the above criteria, Part 2 JPO Guidelines gives some examples of the evidence that the trademark owner can provide such as:

(i) Photographs, movies, etc showing the actual state of use of a trademark (ii) Business documents (Order slips (purchase orders), shipment slips, invoices (delivery slips and certificates of receipt), bills, receipts, account books, etc.) (iii) Advertisements (newspapers, magazines, catalogues, leaflets, TV commercials, etc.) used by the applicant and proofs proving his past record (iv) Articles in general newspapers, trade journals, magazines and the Internet presenting the trademark in an application by persons other than the applicant (v) Outcome reports of the questionnaire intended for consumers regarding awareness of the trademark (However, due consideration will be given to the objectivity and neutrality of the questionnaire with respect to the conductor, method, and respondents)31

It should be noted that the above criteria and evidence are only for reference and guidance, interested parties can provide other documents and evidence as well as competent authorities to evaluate well-known trademarks It is also possible to evaluate that mark on criteria other than those mentioned above

- Well-known trademark recognition

The form of recognition of a well-known trademark in Japan is through a decision of the Court The recognized well-known trademarks will be saved in the list of well-known trademarks on the database of Intellectual Property Digital Library (IPDL) of Japan

- ‘Defensive trademark’ mechanism

The 'defensive trademark' mechanism is a Japanese-specific mechanism to protect well-known trademarks Although there are a number of countries that also apply this mechanism such as Australia and Taiwan, the Japanese mechanism is still considered the most prominent model Article 64 (1) The Trademark Law has mentioned the term

30 Ngô Thuỳ Dương, Master thesis, Well-known trademark protection in accordance with Vietnamese law and

some Asian countries law, page 47

31 Available at https://www.jpo.go.jp/e/system/laws/rule/guideline/trademark/kijun/document/index/all.pdf

defensive mark as follows: “Where a registered trademark pertaining to goods is well known among consumers as that indicating the designated goods in connection with the business of a holder of a trademark right, the holder of the trademark right may, where the use by another person of the registered trademark in connection with goods other than the designated goods pertaining to the registered trademark or goods similar thereto, or in connection with services other than those similar to the designated goods is likely to cause confusion between those other person's goods or services and the designated goods pertaining to their own business, obtain a defensive mark registration for the mark identical with the registered trademark in connection with the goods or services for which the likelihood of confusion exists” Thus, a defensive mark is a mark similar to a well-known mark registered by the owner of the well-known mark with the JPO for goods or services that are different or similar to those for which the well-known trademark has been registered to prevent others from using their well-known trademark on unwanted products, thereby dilute the well-known trademark32

Defensive marks have some characteristics that are different from well-known trademarks and ordinary trademarks as follows: (i) Defensive marks are born for the purpose of supporting the protection of well-known trademarks, not for the purpose of distinguishing goods and services of different enterprises; (ii) Due to the different functions compared to ordinary trademarks, Japanese law does not require the use of defensive trademarks An ordinary trademark, if registered without being attached to specific goods or services, will lose its function of distinguishing goods and services, such acts are also considered as acts of trademark appropriation, causing damage to other subjects However, for a defensive mark, the owner can register it without producing the goods registered with that mark and of course not using the defensive mark because the registration of the defensive mark only for the purpose of preventing violations; (iii) In order to register a defensive mark, the original mark must be recognized as a well-known mark; (iv) The right to a defensive mark is lost when the trademark owner loses the right to a well-known mark

After being registered, the defensive mark will be recorded with the type of goods and services registered with that mark Since then, whenever an individual or organization registers a trademark identical or similar to the defensive mark for goods

32 Vũ Thị Phương Lan, “Well-known trademarks and protection of well-known trademarks by 'defensive mark'

tool in Japan”, Jurisprudence Magazine No 8/2019, page 66

or services that are identical to those registered for the defensive mark, the JPO shall refuse to protect that sign

1.5 Sub-concluding remarks

Trademark law is one of the most important areas of modern intellectual property law and plays an increasingly important role in the international trade system Trademark law always has a close relationship with other legal fields in the area of trade The formation of the well-known trademark theory has opened up a new approach to trademark protection around the world With the strong development of international trade and the booming of the Internet, the protection of well-known trademarks has become more and more important However, the concept of a well-known mark remains vague and lacks a common international understanding This concept is mainly regulated depending on the laws of each country In this chapter, I have analyzed some basic theoretical issues about well-known trademarks and ordinary trademarks, combined with reference to the well-known trademark protection mechanism in international instruments and in domestic law of some countries

CHAPTER 2

THE LEGAL FRAMEWORK OF WELL-KNOWN TRADEMARK PROTECTION IN VIETNAM

2.1 Definition of well-known trademark under Vietnamese law

The term “well-known trademark” is a new concept under Vietnamese law The phrase "well-known trademark" was first mentioned in Decree 63/CP dated October 24, 1996 Accordingly, Article 6 (1) (e) provides that a sign used as a trademark is recognized as distinctive when it is not identical or confusingly similar to another person's trademark considered well-known (according to Article 6bis of the Paris Convention) However, this decree does not provide a specific definition of a well-known mark

It was only when the Decree No.06/2001/ND-CP was issued, amending and supplementing a number of articles of Decree No.63/CP detailing industrial property, that we had the first legal document to recognize the definition of 'well-known trademark' Accordingly, Article 8.2.b of this Decree stipulates: "A well-known trademark is a trademark for goods that is continuously used for prestigious products or services, making that mark widely known” This definition marks a new step in the protection of well-known trademarks in Vietnam, but this definition still has many shortcomings Firstly, this definition clearly states that a well-known mark is a trademark for goods, which is not really appropriate because a well-known mark can be a service mark This is quite understandable in the context that our country's economy at that time was not really developed, and the types of services had not yet been paid attention Secondly, the use of the phrase "prestigious goods and services" is not really appropriate It must be recognized that a well-known trademark means that the goods and services associated with that mark are often of high quality and gain the trust of customers However, the prestige of a product or service is not enough to create a well-known trademark because there are many other criteria to evaluate a trademark depending on the laws of each country For example, a product attached with a trademark that is only distributed within a province in Vietnam and has only built a reputation in that province can hardly be recognized as a well-known trademark In addition, this law does not specify the criteria for assessing the prestige of a trademark Thirdly, this provision requires a well-known trademark to be used continuously, but it

is not clear that such continuous use must be in the territory of Vietnam or all around the globe or how long the continuous use is Lastly, the geographical scope of the term is not defined The Decree does not state whether evidence of the fame of the trademark only from activities within the territory of Vietnam or elsewhere is to be considered33

The adoption of the 2005 Intellectual Property Law can be considered as a breakthrough in the development of the legal system on intellectual property rights protection in general and trademark protection in particular in Vietnam34 In which, the definition of a well-known mark has also been revised and improved Specifically, Article 4.20 of the 2005 Intellectual Property Law provides “Well-known trademark means a mark widely known by consumers throughout the territory of Vietnam” In general, this definition has progressed compared to the previous definition, but there are still some unresolved issues Typically, the scope of consumers mentioned in the above definition is the totality of consumers in Vietnam or only a portion of consumers related to the goods and services bearing the mentioned mark There are many different views on this issue, but in my opinion, the consumers in this definition should be the segment of consumers related to goods and services bearing the trademark because it conforms to Article 16.2 of the TRIPs Agreement and is convenient for practical application because the consumer in general is too large that cannot require a mark to be known to all consumers of all ages, classes and occupations It can be seen that the absence of a specific guiding document on the term ‘well-known trademark’ has made it difficult for the competent authorities and concerned individuals to understand and use this definition

2.2 Criteria for identifying well-known trademarks

Up to now, countries around the world still do not have a uniform set of regulations to define well-known trademarks The identification of a well-known mark is usually based on national law of each country, in accordance with the principle provisions in international documents on intellectual property protection According to Vietnamese law, the competent authority must base on the evidence provided by the trademark owner, the information and documents that they have collected and compare

33 Phan Ngoc Tam, Doctoral Dissertation of Law , Well-known trademark protection A comparative study

between the laws of the European Union and Vietnam, page 115

34 Phan Ngoc Tam, Le Quang Vinh, Project Research Report: Protection of Well-known trademark under

Vietnamese law – Situation and Solutions, page 112

with the provisions of law to identify well-known trademarks The set of criteria for determining well-known trademarks specified in Article 75 of the Intellectual Property Law 2005 (as amended 2009, 2019) includes:

• The number of relevant consumers who were aware of the mark by purchase or use of goods or services bearing the mark, or from advertising

A well-known trademark may be known to many consumers about its characteristics; the quality of products and services bearing the mark; the manufacturer of that product; Trademark owners who want to prove that their mark is well-known in Vietnam must provide proof that their mark is known to 'relevant consumers' It can be seen that the 'relevant consumers' factor in the 2005 Intellectual Property Law is consistent with the spirit of Article 16 (2) of the TRIPs Agreement and is also similar to the first criterion to identify well-known trademarks in WIPO's Recommendation There is no specific guidance in the legal documents to define 'relevant consumers', so 'relevant consumers' should be understood as 'actual and/or potential consumers of the type of goods and/or services to which the mark applies' (the element that identifies the ‘relevant sector of the public’ in the WIPO recommendation) Regarding the number of consumers who are aware of the trademark, Vietnamese law does not specify the exact number, so the consideration of this issue will depend on each specific case According to Article 42.3 of Circular 01/2007-BKHCN (as amended in in article 35.a of Circular 16/2016/TT-BKHCN), the number of relevant consumers can be determined through survey data of consumers who know the brand through buying, selling, using and advertising and marketing

• The territorial in which goods and services bearing the mark are circulated This is a criterion that determines the geographical scope of the use of a mark The more a mark is used in different countries or regions other than the country where it was first registered, the more likely it is to be recognized as a well-known mark Wide range of uses, existence and development in many countries is what creates the reputation of a brand This regulation is also consistent with criteria number (ii), (iii), (iv) in WIPO's recommendation on criteria for determining well-known trademarks35

35 (ii) the duration, extent and geographical area of any use of the mark

(iii) the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies

• Turnover of the sale of goods or provisions of services bearing the mark or the quantity of goods sold or services provided

It cannot be denied that the popularity and reputation of a trademark will be partly reflected in the sales and service provision bearing the mark of that business Take Apple as an example: In 2021 the company's phone sales revenue is $196 billion, more than twice as much as second-place Samsung's ($73 billion) and about five times more than other phone manufacturers such as OPPO, Xiaomi That same year, Apple also reached the milestones of 2 billion phones sold All of the above numbers show that this is a very reputable trademark and the fact that Apple's trademark is protected as a well-known trademark in many countries around the world is not surprising It should be noted that Apple is a leader in selling phones globally, so determining whether their revenue and sales volume is high or low is quite simple In contrast, for other businesses, it is not so easy to assess whether their sales are high or low How does one define the level of “turn-over” received from the mark as well as the “volume” of goods sold or services supplied in order to consider a mark to be well-known? Furthermore, the provision of figures on revenue and quantity of goods sold and provided services must be assessed both in terms of territory as well as related goods and services, this evidence must be supported by other evidence36

• Duration of continuous use of the mark

A trademark cannot build a reputation and become widely known in a short time A company must provide their goods and services to the market for a relatively long period of time to be able to assert the prestige and quality of their products, thereby building a reputation for the trademark For example, the trademark ‘GUCCI’ appeared more than 100 years ago Vietnamese law has no specific regulations on how long a trademark must be used continuously to become well-known, nor does it specify the geographical scope in which the mark must be used continuously This makes it difficult to determine the continuous use of a trademark For example, a well-known trademark has been used continuously in the US for 100 years but has not been used in Vietnam Is the mark considered to meet the criteria for continuous use of the mark?

• Widespread reputation of goods or services bearing the mark

(iv) the duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent that they reflect use or recognition of the mark

36 Nguyễn Thị Vân, Master Thesis, Protection of well-known trademark under Vietnamese law, page 53